Patsy's Brand, Inc. v. I.O.B. Realty, Inc.
- Kimba Wood
- 1:99-cv-10175
- U.S. District Court · Southern District of New York
- 10
In Patsy's Brand v. I.O.B. Realty, Judge Wood denied Defendants’ motion to clarify or modify a trademark injunction limiting “Patsy’s Pizzeria” label text.
The defendants— I.O.B. Realty, Inc., Patsy’s Inc., Frank Brija, John Brecevich, and Nick Tsoulos—could continue selling packaged food only under the existing injunction’s labeling restrictions; Patsy’s Brand, Inc. did not obtain a change to those restrictions.
What happened
Patsy's Brand, Inc. v. I.O.B. Realty, Inc. concerned Defendants’ request to clarify a permanent trademark injunction governing how they could label packaged food products.
Defendants wanted to use “Made by Patsy’s Pizzeria” in text as large as other label text and to exceed the injunction’s 10-point limit. They said the change was needed because of hardships caused by the COVID-19 pandemic. Plaintiff opposed the request.
The court ruled that the injunction was already clear and that Defendants had not shown a sufficient reason to change it. Judge Kimba M. Wood denied Defendants’ motion to clarify and modify the injunction.
The detailed version
- Patsy's Brand, Inc. v. I.O.B. Realty, Inc. · No. 1:99-cv-10175
- Kimba Wood
- July 24, 2020
Background
This case involves a longstanding trademark injunction governing Defendants’ packaged food labels. The Second Circuit previously allowed Defendants to identify that a product came from an establishment operating as “Patsy’s Pizzeria,” but imposed conditions. The identification had to be no larger than 10-point type, be a minor part of the label, use “Patsy’s Pizzeria” in full with both words in the same size and font, avoid a font similar to Plaintiff’s, and identify only the maker or distributor.
Defendants moved to clarify whether the identification could appear in the same size type as other label elements. They also sought to modify the injunction to permit type larger than 10 points. Defendants argued that the modification was justified by hardships associated with the COVID-19 pandemic. The motion concerned a proposed “bullseye”-style label containing the words “MADE BY PATSY’S PIZZERIA.”
Legal Standards
The court explained that district courts may clarify permanent injunctions to provide certainty about compliance and fair warning about conduct that could lead to contempt. A court may also modify an injunction under Federal Rule of Civil Procedure 60(b)(5) when a significant change in facts or law makes continued enforcement inequitable, or under Rule 60(b)(6) when extraordinary circumstances or extreme and undue hardship justify relief. The party seeking modification bears the burden of showing that the requested change is properly tailored to the changed circumstances. A motion under either provision must also be filed within a reasonable time.
Court’s Analysis
The court denied the request for clarification because the injunction was detailed and clear. It did not impose a categorical rule that the identification had to be smaller than every other item on the label. At the same time, the placement, prominence, and style of the identification could matter in deciding whether it was a minor component of the label. The court declined to decide whether the proposed label would comply with the injunction or who would prevail in a future contempt proceeding.
The court also denied the request to modify the 10-point limit. It found that Defendants had not shown a credible connection between the pandemic and the requested indefinite change. The court noted that Defendants had sought a similar expansion of their packaged-food business and removal of the type-size restriction in 2006, and that the earlier motion had been denied.
The court further concluded that the injunction did not prevent Defendants from selling packaged food. Defendants could do so if their labels complied with the injunction, and they acknowledged that they would sell the products through their own restaurants. The court found that the inability to use an identification larger than 10-point type did not make compliance sufficiently onerous, unworkable, or inequitable to justify modification. Defendants also did not identify a separate basis for relief under Rule 60(b)(6).
Disposition
For these reasons, Judge Kimba M. Wood denied Defendants’ motion to clarify and modify the permanent injunction.
Read the full 10-page opinion on CourtListener, the free public archive maintained by the Free Law Project.